Clarification that Divisional Double Patenting Objection Resolvable by Surrender of Parent Patent
In Ganymed Pharmaceuticals GmbH (and Anor) 2021 NZIPOPAT 6 the Assistant Commissioner has clarified that Regulation 82(b) does not prevent an applicant from avoiding a double patenting objection on a divisional application by surrendering the patent granted from the parent.
The applicants sought to have divisional application 738493 accepted for claims that they acknowledge are the same or substantially the same as those in their granted patent 718280. They sought to avoid a double patenting objection by surrendering their granted patent. However, IPONZ considered that the surrendering of the granted patent would not remove the basis for the double patenting objection on account of the wording of the relevant legislation.
Regulation 82(b) of the Patents Regulations 2014 states:
(b) in the case of a divisional application, if the Commissioner has accepted the complete specification relating to a parent application, that the divisional application must not include a claim or claims for substantially the same matter as accepted in the parent application; and …
IPONZ interpreted the ‘as accepted in the parent application’ provision of regulation 82(b) to mean the claims of the parent application must be considered as they stood at the time the parent application was accepted. A consequence of that interpretation being that the subsequent surrendering (or amendment) of the parent’s accepted claims would not allow a divisional application to include a claim or claims for substantially the same matter. The form of the parent patent claims at the time of acceptance of the divisional application was not considered relevant by IPONZ.
While the Assistant Commissioner considered that IPONZ’s interpretation of the legislation was not without merit, the applicants’ challenge to IPONZ interpretation was allowed on two counts. Firstly the Assistant Commissioner noted when the divisional application was filed regulation 82 was significantly different and had no equivalent of current regulation 82(b). Rather, the prohibition on double patenting was in now revoked regulation 52(3)(a), which provided that:
the divisional application must not include a claim or claims for substantially the same matter as claimed in the parent application;
The divisional was filed while regulation 52(3)(a) was still in force and the parent was filed while the Patents Act 1953 was still in force. Regulation 23(2) of the Patents Regulations 1954 provides that:
(2) The Commissioner may require such amendment of the complete specification filed in pursuance of either of the said applications as may be necessary to ensure that neither of the said complete specifications includes a claim for matter claimed in the other;
The Assistant Commissioner noted that under both of these prior provisions prohibiting double patenting that the double patenting objection could be resolved by surrendering the parent. The simultaneous revocation of regulation 52(3)(a) and substitution of regulation 82 by the Patents Amendment Regulations 2018 involved no transitional regulations. Consequently, the Assistant Commissioner applied principles from the Interpretation Act 1999 to the effect that new legislation does not have retrospective effect and held that surrendering of the parent application removes the double patenting objection.
In case wrong in holding that and also to clarify the scope of regulation 82(b) the second count on which the Assistant Commissioner allowed the applicant’s challenge was that IPONZ’s interpretation is too narrow on account of reading ‘accepted’ in isolation. The Assistant Commissioner noted from the general scheme of the Act that post-acceptance changes to the claims and status of the parent patent is provided for and considered that regulation 82(b) should be interpreted in line with that. The explanatory note to the changes to regulation 82 was considered to count against IPONZ’s narrow interpretation. It provided that:
Regulation 52(3) is revoked and regulation 82 amended to apply requirements regarding the respective content of divisional and parent patent applications at the acceptance of specification stage, rather than the application stage.
The Assistant Commissioner considered the possibility for re-litigation, whereby an infringement defendant might be subject to litigation under an essentially equivalent divisional after the parent is surrendered. However, in the context of the legislative amendments the Assistant Commissioner was not satisfied there was a problem regarding the status of surrendered, or amended or revoked patents that was needed to be and was addressed in the amendments. Taking into account the policy intent behind the regulations as a whole the Assistant Commissioner held that regulation 82 does not exclude consideration of post-acceptance changes to the parent application by way of surrender of the patent.
Author: Quinn Miller